Ex Parte Yang et al

Patent Trial and Appeal Board

Jun 28, 2016

13202936 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/202,936 08/23/2011
48116 7590 06/30/2016
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
FIRST NAMED INVENTOR
Tao Yang
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
LUTZ 201302US01 3144
EXAMINER
SMITH, JOSHUA Y
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
06/30/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAO YANG and ANTONELLA F ANIUOLO
Appeal2015-002213
Application 13/202,9361
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1--4, 6-13, and 15-18.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE the rejection of claims 1--4, 6-13, and 15-18, and
enter a new ground of rejection for claims 1-20 pursuant to our authority
under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Alcatel Lucent. App.
Br. 2.
2 Claim 5 is objected to, but would be allowable if rewritten in independent
form including all of the limitations of the base claims and any intervening
claims. Ans. 26. The Examiner has allowed claims 14, 19, and 20. Ans. 27.
Appeal2015-002213
Application 13/202,936
STATEMENT OF THE CASE3
The Invention
Appellants' claimed invention relates to "[a] method, a base station
and a relay station for performing ARQ process in a relay based system."
Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. A method, in a relay-based wireless
communication system, for performing downlink automatic
retransmission request ARQ process, comprising:
using a BS, transmitting first data to a RS, where the first
data multiplexes second data for at least one terminal
equipment;
using the BS; triggering an unsolicited ARQ process to
the RS if transmission of the first data fails without waiting for
an acknowledgment or status report from the RS, so as to
perform retransmission of the first data;
using the RS, demultiplexing the first data transmitted
from the BS to generate the second data, and sending the
demultiplexed second data to the at least one terminal
equipment;
using the RS, triggering an unsolicited ARQ process to
the at least one terminal equipment if transmission of the
second data fails, without waiting for an acknowledgment or
3 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed June
9, 2014); Reply Brief ("Reply Br.," filed Nov. 20, 2014); Examiner's Answer
("Ans.," mailed Sept. 22, 2014); Final Office Action ("Final Act.," mailed
Feb. 12, 2014); and the original Specification ("Spec.," filed Aug. 23, 2011).
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Application 13/202,936
status report from the at least one terminal equipment, so as to
perform the retransmission of the second data; and
using the at least one terminal equipment, receiving the
second data and triggering a passive ARQ process for reception
of the second data.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Chang et al. US 2007 /0275657 Al Nov. 29, 2007
("Chang")
Chion et al. US 2007 /0298778 Al Dec. 27, 2007
("Chion")
Yau et al. US 2008/0002599 Al Jan.3,2008
("Yau")
Shiizaki et al. US 2008/0137689 Al June 12, 2008
(" Shiizaki ")
Yi et al. ("Yi") US 2008/0151889 Al June 26, 2008
Jeong et al. US 2009/0116420 Al May 7, 2009
("Jeong")
Hu et al. ("Hu") US 2010/0067460 Al Mar. 18, 2010
Rejections on Appeal
RI. Claims 1--4, 6, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Chion, Hu, and Yau.
Ans. 3.
R2. Claims 7-9 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Chion, Chang, and Hu. Ans. 12.
R3. Claims 10-13 and 18 stand rejected under§ 103(a) as being
unpatentable over the combination of Chion, Jeong, and Yau. Ans. 19.
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Application 13/202,936
ISSUE
Appellants argue (App. Br. 10-14; Reply Br. 8-13) the Examiner's
rejection of claims 1--4, 6-13, and 15-18 under 35 U.S.C. § 103(a) as being
obvious over various combinations of Chion and the other cited prior art of
record is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the limitation of "using the BS, triggering an unsolicited ARQ
process to the RS if transmission of the first data fails without waiting for an
acknowledgment or status report from the RS, so as to perform
retransmission of the first data," as recited in claim 1, and as
commensurately recited in each of independent claims 7, 10, and 14?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants.
We agree with Appellants' arguments regarding the contested
conditional negative limitation "if transmission of the second data fails,
without waiting for an acknowledgment" with respect to claim 1. We
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
Appellants contend "the Final Action provides no suggestion,
motivation, or reasonable expectation of success regarding why a person of
ordinary skill in the art would have attempted to modified Chion to initiate
an unsolicited ARQ process based on the teachings of Hu." App. Br. 11.
Appellants further contend, regarding Fig. 3 of Chi on:
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Application 13/202,936
[T]his fundamental mechanism of Chion would be rendered
inoperative for its intended purpose, and the skilled artisan
would therefore not have any motivation or reasonable
expectation of success in modifying Chi on in view of Hu as
proposed in the Final Action. Moreover, as discussed above, the
citations to Hu do not involve transmission from a base station
to an RS as claimed, but instead relate to base station-to-user
equipment communications, whereby the skilled artisan would
not look to Hu for modifying the cited operation of Chion. For
these further reasons, therefore, the claims are patentably
distinct and the rejections should be reversed.
App. Br. 11-12.
The Examiner finds Chion teaches that a BS retransmits a message
without receiving any acknowledgement (ACK) message from a SS/RS
when a retransmission timer expires, and concludes this is substantively the
same as triggering an unsolicited ARQ process to the RS, so as to perform
retransmission of the first data of claim 1. However, the Examiner further
finds Chion fails to teach triggering an unsolicited ARQ process without
waiting for an acknowledgment or status report from the RS. The Examiner
relies on the Hu reference for teaching an ARQ-related process involving
proactive re-transmissions, which does not wait for any acknowledgement
message, and is substantively the same as triggering an unsolicited ARQ
process without waiting for an acknowledgment or status report from the RS
of claim 1. Ans. 28.
We disagree with the Examiner, and are persuaded by Appellants'
arguments because Chion's timer depicted in box 343 in Figure 3, shown
below, teaches that the timer is waiting for an ACK message after a
transmission of data fails in step 341 before it retransmits the data in
step 344. Chion teaches the original data message is retransmitted when the
timer expires.
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Appeal2015-002213
Application 13/202,936
Chion, Fig. 3 is reproduced below:
· 3GO
331.
UL r1:loc6t:nn for t\CK MSG
. ACK (BS __ MSm'J __ MSG __ :, TRAN m 1)
'
. 320
. .... :1:32
341
:342
343
Tt:~100;.,lt ~1\>'aitinQ: fot
foras __ MSRS __ MSG __ 1 ·'
TRAN lDZ, BS
retransmits
346
•• ·······················-~·E;)-"?"'"'-'':1E;~;c,.'i!F("t:J.'i)?) .................. -=;::;..~-:::.~----~-
346
FIG. 3
"FIG. 3 illustrates examples of message flow with generic ACK signaling
between a BS and a SS/RS." Chion ,-r 36.
Thus, we find Chion's teaching of timeout waiting for an ACK
message teaches the limitation in claim 1, i.e., "if transmission of the first
data fails." However, we note the "perform retransmission of the first data"
portion of the limitation occurs after waiting for an acknowledgement, not
"without waiting," as recited in claim 1. Chion, Fig. 3 (element 343).
Therefore, we find Chion fails to teach or suggest the recited negative
limitation, "without waiting for an acknowledgment" of claim 1. We find, in
fact, Chion expressly teaches the opposite of this claim limitation because
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Application 13/202,936
Chion teaches waiting for an acknowledgement before retransmitting the
data.
We therefore find the Examiner erred in rejecting the claims on appeal
because there is no teaching or suggestion in the cited prior art, nor is there
any evidence of record supporting the Examiner's conclusion that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to modify Chion with the Hu technique to introduce a proactive re-
transmission. Ans. 28.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). We also find
that the Examiner has not provided a rational underpinning for modifying
Chion as suggested in the rejection, and as required by KSR. 4 Further,
" [ e ]ven when obviousness is based on a single prior art reference, there must
be a showing of a suggestion or motivation to modify the teachings of that
reference." In re Kotzab, 217.3d 1365, 1370 (Fed. Cir. 2000).
Accordingly, Appellants have provided evidence and/or argument
sufficient to persuade us of at least one reversible error in the Examiner's
legal conclusion of obviousness such that we cannot sustain the Examiner's
rejection of independent claim 1 under§ 103. Similarly, we find the
rejection of independent claims 7 and 10 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Chion, Chang and Hu; and
Chion, Jeong, and Yau, respectively, tum on the same dispositive issue
4 KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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Application 13/202,936
presented above with respect to claim 1, such that we also cannot sustain the
§ 103 rejections of these claims.
Regarding the second and third-stated rejections under§ 103, the
Examiner has not shown how the additional cited references overcome the
aforementioned deficiencies with Chion. Accordingly, we reverse the § 103
rejections of all claims 1--4, 6-13, and 15-18 on appeal.
NEW GROUND OF REJECTION
35 U.S. C. § 112 - first paragraph, enablement: Claims 1-20.
We enter a new ground of rejection for claims 1-20 under 35 U.S.C.
§ 112, first paragraph, as lacking an enabling disclosure.
The first paragraph of 35 U.S.C. § 112 requires that the manner of
making and using the claimed invention must be clearly set forth in the
Specification:
The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same ....
35 U.S.C. § 112, first paragraph.
The "enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation." AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) (citation omitted).
Any analysis of whether a particular claim is supported by the
disclosure in an application requires a determination of whether that
disclosure, when filed, contained sufficient information regarding the subject
matter of the claims so as to enable one skilled in the pertinent art to make
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and use the claimed invention. The statute (35 U .S.C. § 112) has been
interpreted to require that the claimed invention be enabled so that any
person skilled in the art can make and use the invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Whether
undue experimentation is required is a conclusion reached by weighing
several underlying factual inquiries. Id. at 736.
Factors to be considered in determining whether a disclosure
would require undue experimentation . . . include (1) the
quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Id. (citation omitted).
Here, Appellants' originally-filed Specification (filed Aug. 23, 2011,
p. 10, 11. 15-29) describes, in pertinent part: 5
BS (eNode B) automatically triggers the unsolicited ARQ
process between the BS and ARS, after the corresponding LI
(Layer 1) transmission fails;
For ARQ process, there is no status report from the ARS, in
order to avoid waste of resources. The ARQ retransmission is
triggered by the transmitter, not the receiver, and the fast ARQ
retransmission reduces the latency.
(emphasis added).
5 Appellants indicate: "Specification references are made to the substitute
specification, clean version, filed June 6, 2013." (App. Br. 6). Appellants
refer to page numbers and line numbers (id.); however, no line numbers are
included in the substitute specification. For purposes of this appeal, we refer
only to the original Specification, filed Aug. 23, 2011.
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Application 13/202,936
However, we are unable to find where the Specification provides an
enabling disclosure for the argued claim limitation "using the BS, triggering
an unsolicited ARQ process to the RS if transmission of the first data fails
without waiting for an acknowledgment or status report from the RS, so as
to perform retransmission of the first data," as recited in claim 1.
As duplicated above, Appellant's originally-filed Specification (page
10, lines 25-29) describes the advantages (indicated in bold): "[f]or [an]
ARQ process, there is no status report from the ARS, in order to avoid waste
of resources" and "[t]he ARQ retransmission is triggered by the transmitter,
not the receiver, [such that] the fast ARQ retransmission reduces the
latency."
However, we conclude Appellants' Specification lacks an enabling
disclosure with respect to the negative "without waiting for an
acknowledgment" limitation, based on at least the following Wands factors,
(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, and (8) the breadth of the claims.
We note Appellants' persuasive arguments discussed above regarding
the prior art rejections against using Chion's conventional "ACK" and
"NACK" approach in determining whether to retransmit. However, we find
no description in the originally-filed Specification of any non-ACK/NACK
technique that would enable one of ordinary skill in the art to make and use
(i.e., practice) the contested step or act of, "triggering an unsolicited ARQ
process to the RS if transmission of the first data fails without waiting for
an acknowledgment or status report from the RS, so as to perform
retransmission of the first data," as recited in claim 1 (emphasis added).
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Application 13/202,936
On this record, we find undue experimentation, requiring direction
and/or guidance (i.e., knowledge) found outside of the originally-filed
Specification, would be required to enable the full scope of the contested
claim limitation.
CONCLUSION
The Examiner erred with respect to obviousness Rejections RI
through R3 of claims 1--4, 6-13, and 15-18 under 35 U.S.C. § 103(a) over
the cited prior art combinations of record, and we do not sustain the
rejections.
Claims 1-20 stand newly rejected under 35 U.S.C. § 112, first
paragraph, for lack of an enabling disclosure.
DECISION
We reverse the Examiner's decision rejecting claims 1--4, 6-13,
and 15-18.
We enter a new ground of rejection for claims 1-20 under 35 U.S.C.
§ 112, first paragraph, for lack of an enabling disclosure.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Therefore, this Decision containing a new ground of rejection shall
not be considered final for judicial review. See MPEP §1214.0l(I). Section
41. 50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart. 6
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same Record. The request for rehearing must address
any new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
See 37 C.F.R. § 41.50(f) ("Extensions of time under§ 1.136(a) of this
title for patent applications are not applicable to the time periods set forth in
this section.").
REVERSED
37 C.F.R. § 41.50(b)
6 Note MPEP 1214.0l(I): "If the appellant submits an argument without
either an appropriate amendment or new evidence as to any of the claims
rejected by the Board, it will be treated as a request for rehearing under 3 7
CPR 41.50(b)(2)." See also "conditional" request for continued
examination, specifically addressed under MPEP 706.07(h)(III)(C).
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